Appeal No. 95-5066
Serial No. 07/931,330
non-analogous art. Moreover, substantial structural modification would have to be made to the
mechanism of Hamuro to permit either additional lateral movement of the hot irons 11 or to provide
additional hot irons and selective control means therefore. Thus, appellant argues, the examiner is
engaged in hindsight reconstruction of the claimed invention. (Brief pages 14-19; Reply Brief pages 5
and 7-9)
Whether Hamuro and Newton are analogous prior art is a question of fact based on two
criteria (1) whether the art is from the same field or endeavor regardless of the problem addressed, and
(2) if not, whether the reference is still reasonably pertinent to the particular problem with which the
inventor is involved. In re Clay, 966 F.2d 656, 659, 23 USPQ2d 1058, 1061 (Fed. Cir. 1992).
Here, Hamuro relates to laminating ceramic capacitors while Newton relates to producing
collated paper business forms. Nonetheless, the examiner argues Hamuro and Newton are still
combinable because
...Newton is "reasonably pertinent" to Appellant's particular problem because of one
having had ordinary skill in the art would have had a reasonable expectation that a
reference directed to reducing the misalignment, uneven stacking, or sharp sloping (col.
1, lines 59-60 of Newton) caused by the increase in thickness of a stack resulting
from a total glue application on each form of the stack to produce a thick glue line,
or "tenting", would be helpful improving the problem of misregistration and stacking
defects in tack welded green sheets. (emphasis added, Substitute Answer sentence
bridging pages 16-17).
However, appellant's particular problem is not misalignment caused by an "increase" in stack thickness
in the weld area, but rather a "decrease" in stack thickness in the weld area. Moreover, glue
application techniques would not seem to be reasonably pertinent to welding techniques.
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